Patent Reform

February 19, 2013

On September 16, 2011, President Obama signed the Leahy-Smith America Invents Act (AIA). The Act represents the most significant change to the U.S. patent system since 1952. For example, the law changes the U.S. patent system from a "first to invent" to a "first inventor to file" system and expands the definition of prior art that is used in determining the patentability of an invention. Its central provisions are effective for patent applications filed on or after March 16, 2013.

Click here to see additional AIA resources available on the web site of the U.S. Patent and Trademark Office at www.uspto.gov.

NEWS

CLIENT ALERTS

PUBLICATIONS

EXTERNAL RESOURCES

The Patent Office has provided publications on the many changes made by the AIA. Links to a number of the publications, including the PTO resources, follow:

  • See a side-by-side comparison of US Patent Law before and after the AIA
  • Changes to Implement the Inventor’s Oath or Declaration Provisions (Effective: September 16, 2012)
    • Overview: The AIA permits an assignee to be identified as the Applicant for a US patent application. Previously, an assignee could file the application but only the inventor could be named as the applicant. Additionally, the AIA streamlines the requirements for the inventor’s oath or declaration and allows for a substitute statement in lieu of an oath or declaration in certain circumstances. The PTO revised the rules of practice related to the inventor’s oath or declaration, including reissue oaths or declarations and substitute statements signed by someone other than an inventor, and it provides for assignments containing oath or declaration statements. As a result, there are easier procedures to move forward with a US patent application in the event an inventor refuses to sign a declaration, cannot be found, or is otherwise unable to sign. The PTO also revised and clarified the rules of practice for power of an attorney and prosecution of an application by an assignee.
  • Changes to Implement the Supplemental Examination Provisions (Effective: September 16, 2012)
    • Overview: The supplemental examination provisions of the AIA permit a patent owner to request supplemental examination of a patent by the PTO to consider, reconsider or correct information believed to be relevant to the patent. These provisions could assist a patent owner in addressing potential challenges to the enforceability of the patent prior to litigation. The PTO also adjusted the fee for filing a request for ex parte reexamination and established a fee for petitions seeking supplemental examination or inter partes review.
  • Changes to Implement Inter Partes review Proceedings, Post-Grand Review Proceedings and Transitional Program for covered Business Method Patents (Effective: September 16, 2012)
    • Overview: The USPTO established rules of practice to implement the provisions of the AIA that create the new inter partes review proceeding (which replaces inter partes reexaminations), post-grant review proceeding (similar to patent oppositions in other countries, and only available for patents issuing on applications filed on or after March 16, 2013) and transitional post-grant review proceeding for covered business method patents.
  • Rules of Practice for Trials before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions (Effective: September 16, 2012)
    • Overview: The USPTO established rules of practice to implement provisions of AIA that provide for trials before the Patent Trial and Appeal Board. It provides a consolidated set of rules in relation to Board trial practice for inter partes review, post-grant review, the transitional program for covered business method patents and derivation proceedings. It also provides a consolidated set of rules to implement the provisions of the AIA related to seeking judicial review of Board decisions.
  • Transitional Program for Covered Business Method Patents - Definitions of Covered Business Method Patent and Technological Invention (Effective: September 16, 2012)
    • Overview: The USPTO established rules of practice to implement the provisions of the AIA requiring the PTO to issue regulations for determining whether a patent is for a technological invention eligible for a transitional post-grant review proceeding for covered business method patents.
  • Office Patent Trial Guide (applies to proceedings commencing on or after September 16, 2012 as well as derivation proceedings commencing on or after March 16, 2013)
    • Overview: The AIA established several new proceedings, which will be conducted before the Patent Trial and Appeal Board. These include inter partes review, post-grant review, the transitional program for covered business method patents and derivation proceedings. The PTO provides a guide to advise the public on the general framework of the regulations pertinent to AIA, including the structure and times for taking action in each of the new proceedings.

Resources